Introduction and Benefits of Patent Cooperation Treaty (PCT) System
31 Oct 2024
Currently, the companies often seek patent protection in multiple countries to safeguard their innovations. However, filing separate patent applications in each country can be a time-consuming, complex, and costly process. The Patent Cooperation Treaty (PCT) offers a solution by assisting applicants in seeking patent protection internationally for their inventions. Applicants can simultaneously seek protection for an invention in many countries simultaneously. This article provides an overview of the PCT system, the key process and highlights the benefits.
Overview of the PCT System
The Patent Cooperation Treaty, administered by the World Intellectual Property Organization (WIPO), is an international treaty that allows applicants to file a single patent application, known as a PCT application, to seek protection in multiple jurisdictions. The PCT system simplifies the process of obtaining patents in over 150 contracting states by deferring the need to file separate national or regional patent applications in each country until later stages.
The PCT does not grant patents itself but serves as a procedural framework for managing international patent applications. After the PCT application is filed, applicants can postpone decisions on where to pursue patent protection, giving them time to assess the commercial potential of their invention in different markets.
Key Stages of the PCT Process
The PCT process consists of several key stages. The first step is filing the PCT application with a receiving office, which could be a national or regional patent office, e.g. IPOS in Singapore, or directly with WIPO. The application includes a description of the invention, claims, drawings, and an abstract. The filing date of the PCT application is the effective international filing date for all designated countries.
Once the PCT application is filed, an International Searching Authority (ISA) conducts an international search to identify prior art that may be relevant to the patentability of the invention. The ISA provides the applicant with an International Search Report (ISR) and a written opinion (WO) on the potential patentability of the invention, addressing aspects such as novelty, inventive step, and industrial applicability.
If desired, applicants can request an optional International Preliminary Examination, also known as demand under chapter II of PCT system.
If no demand is filed, the WO is later reissued as the International Preliminary Report on Patentability (IPRP).
The ISR and written opinion (or IPRP) provide valuable insights into the patentability of the invention. Applicant can use this information to evaluate the strength of the application and decide whether to proceed with further prosecution. If the search results reveal significant prior art, applicants may choose to amend their claims or abandon the application in certain jurisdictions, saving time and money.
Approximately 18 months after the earliest priority date, the PCT application is published by WIPO, along with the ISR and IPRP. The publication of the application makes the invention publicly accessible.
The national phase is the final stage of the PCT process, where applicants file patent applications in individual countries or regions where they seek protection. This must be done within 30 or 31 months of the filing date depending on the jurisdictions. Each national or regional office will examine the application according to its own legal requirements, which may involve further examination, translation, and payment of local fees.
Benefits of Filing a PCT Application
Filing a PCT application offers several advantages, making it a popular choice for applicants seeking international patent protection.
By filing a single PCT application, applicants can effectively initiate the patenting process in multiple countries simultaneously, reducing the administrative burden of filing separate applications in each jurisdiction.
The PCT allows applicants to delay entering the national phase by up to 30 or 31 months from the initial filing date depending on the jurisdictions. This extended timeline gives applicants additional time to evaluate the commercial prospects of their invention and decide where to seek protection.
As part of the PCT process, an ISA conducts an international search, providing applicants with a preliminary view of relevant prior art. This early insight can help applicants make informed decisions about whether to proceed with their application in certain jurisdictions.
The PCT system enables applicants to defer significant costs, such as national filing fees and translation expenses, until later in the process. This can be especially advantageous for small businesses and startups looking to manage their budgets while exploring the global market potential of their inventions.
Conclusion
In conclusion, the PCT system is a powerful tool for streamlining the international patent application process, allowing applicants to seek protection in multiple countries with a single application. By simplifying the filing process, providing early insight into patentability, and offering flexibility in decision-making, the PCT system enables applicants to protect their inventions more efficiently and cost-effectively.
Disclaimer: The content in this article is for informational purposes only and does not constitute any legal advice.